Jun 29, 2006Everett, Wash.-based RFID hardware provider Intermec today said it has filed suit against Morgan Hill, Calif.-based Alien Technology in the U.S. District Court for the District of Delaware for patent infringement. In the suit, Intermec alleges that Alien's UHF RFID readers and tags, which are based on the second-generation EPCglobal air-interface protocol standard, infringe 10 Intermec patents. Intermec is seeking an injunction that would prohibit Alien from selling the infringing RFID products. Intermec is also seeking monetary damages from the sale of Alien's Gen 2 readers.
Earlier this month, Alien filed a lawsuit against Intermec in Federal District Court in the District of North Dakota, in which it sought a declaratory judgment to prove none of its RFID tags and readers infringe on 10 Intermec patents for RFID products and processes, and to prove that the 10 Intermec patents are invalid (see Alien Seeks to Disprove Intermec Patent Infringement). Today, Intermec said it has also filed a motion to dismiss this request for declaratory judgment, on the basis that the North Dakota Federal Court does not have jurisdiction to hear the case.
"Intermec does not have any operations in North Dakota, and Alien is not headquartered there, though it does have some operations there," says Mike Wills, vice president and general manager for RFID at Intermec, to explain why Intermec believes North Dakota lacks jurisdiction to hear Alien's motion for declaratory judgment. "Usually, suits are filed where a company has a main nexus of operation, so it is a question of market jurisdiction."
Six of the 10 Intermec patents named in Alien's request for declaratory judgment are also named in Intermec's patent-infringement suit. These six U.S. patents are as follow:
- No. 5,777,561, for a "method of grouping RF transponders"
- No. 5,850,181, for a "method of transporting radio frequency identification transponders to energize radio frequency identification transponders"
- No. 5,912,632 for a "single chip tag oscillator circuit synchronized by base station modulation frequency"
- No. 5,995,019 for a "method of communicating with RF transponders"
- No. 6,400,274 for "high-performance mobile power antennas"
- No. 6,812,841 for a "passive RFID tag that retains state after temporary loss of power"
The additional four Intermec U.S patents named in the suit filed against Alien are:
- No. 5,528,222, for "RF circuit and memory in thin flexible package (inserts / tags)"
- No. 5,828,318 for "system and method for selecting a subset of autonomous and independent slave entities (chips - ASIC)"
- No. 6,286,762 for "method and apparatus to perform a predefined search on data carriers, such as RFID tags"
- No. 6,812,852, for "system and method for selecting a subset of autonomous and independent slave entities."
Wills explains that Intermec pulled six patents from the pool of 10 named in the Alien motion for declaratory judgment on the basis that they, along with the four additional patents named, are the ones for which Intermec believes it has the strongest case to show infringement.
Intermec, which holds more than 150 RFID patents, has been involved in litigation over those patents since June 2004, when it sued Matrics (later purchased by Symbol Technologies), claiming the company violated four of its patents. This was the first of a spate of suits and countersuits between Intermec and Symbol. In September of last year, the two firms agreed to settle the first of these matters (see Intermec, Symbol Reach Major Agreement), and they have since agreed to resolve the other suits.
This suit clearly puts the IP issue back in the public eye. "The industry will watch the progress of this suit very closely," says Michael Liard, principal analyst with ABI Research, "but I think the impact is difficult to measure at this point in time."
Liard notes that the suit may have particularly bad timing for Alien, given its recent S-1 filing with the Securities and Exchange Commission.
"If the spirit of innovation is the cornerstone of RFID technology, then
IP could be considered the keystone," he says. "RFID vendors certainly have the right and responsibility to defend and protect their IP. As the market continues to move forward, it is highly likely we will see more IP struggles."
But also Liard notes that IP litigation is also "part of the maturation process" of growing industries. "We saw much litigation in the bar code
market and that market continues to thrive," he says. "The lawsuit may also drive industry participants and observers to revisit the role and potential impact of IP consortiums and 'patent pool' initiatives."
